INTERNATIONAL CLASS 18

(Leather goods)

GENERAL SCOPE OF CLASS 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

1. SEARCHING:

Searching by coordinated class –

018[cc] – 014, 025, 035, 042, 044, A, B, 200

2. IDENTIFICATION ISSUES:

Some general wording is allowed in Class 18. The following wording is acceptable:

· Animal carriers

· Athletic bags

· Baby backpacks

· Billfolds

· Business card cases

· Carry-on bags

· Cat o' nine tails

· Dog clothing

· Fur pelts

· Handbags

· Horse bridles

· Key cases

· Leather sold in bulk

· Luggage

· Pelts

· Rawhide chews for dogs

· Saddlery

· Suitcases

· Travel bags

· Trunks

· Umbrella

Indefinite and unacceptable wording includes the following:

· Bags (unless the applicant specifies the type of bags – double check for the class)

· Carrying bags (the applicant may specify “carry-on bag” instead)

· Carrying cases

· Cases

· Garment bags (unless the applicant specifies that the garment bag is for travel; otherwise garment bags for storage are in Class 22)

· Portfolios (unless the applicant specifies that it is a briefcase style portfolio; otherwise stationery type portfolios are in Class 16)

· Products which are otherwise in Class 18 are classified in Classes 20 or 22 if they are used solely for storage

· Bags and cases that are fitted to carry a particular item are classified with the product they are designed to carry, e.g. “bowling ball bags” are in Class 28 with bowling balls; “ski boot bags” are in Class 25 with ski boots; “bags for carrying skis” are in Class 28 with skis; and “cases for carrying lap-top computers” are in Class 9 with computers.

· Vanity cases (unless the applicant specifies that the case is sold empty; fitted vanity cases are in Class 21)

More on Terminology in ID’s:

· Leather, skins, hides, pelts, and synthetic or imitation leather should indicate that it is “sold in bulk”

· The fact that an item is made of leather will not automatically put it in Class 18. For example, leather belts, leather coats, leather shoes are all in Class 25. However, leather shopping bags and leather tool bags will be in Class 18.

· Checkbook covers are in Class 16 regardless of material composition.

· Leather key cases are in Class 18, while metal key rings are in Class 6 and non-metal key fobs are in Class 20. Leather key fobs have been moved to Class 20 as of 01/01/02.

· Pet or animal-related equipment is in Class 18, for the most part.

3. REGISTERED TRADEMARKS:

· TOTES – U.S. Registration Nos. 0925164, 1154884, 1138767 and others [please check status as cancellation is pending on some of the above as of 11/12/02]

44. POSSIBLE DECEPTIVE WORDING RELATING TO MATERIAL CONTENT:

If a mark contains any of the above wording, then the identification of goods must be amended to indicate that the goods are made wholly or substantially in part of the material or animal skin named. An acceptable identification would be: handbags made in whole or substantially in part of pigskin. If the term is a separable element of the mark, then the word must be disclaimed. If the goods are not made at least in part of the material named in the mark, then registration must be refused under Section 2(a) of the Trademark Act [see form paragraph Q22-2] and 2(e)(1) as deceptively misdescriptive [see form paragraphs Q31 and Q31-1 to 3]. This applies equally to foreign words, which identify the material or animal skin named. See also In re Shapely, Inc., 231 USPQ 72 (TTAB 1986); In re Budge Manufacturing Co. Inc., 8 USPQ2d 1259 (Fed. Cir. 1988).

5. POSSIBLE DECEPTIVE WORDING RELATING TO GEOGRAPHIC LOCATION:

· Florence

· Spain

· Morocco

· Italy

If the mark contains the name of a well-known leather producing center and there is no connection between applicant’s goods and the place named, then the mark should be refused under Section 2(a) [see form paragraphs Q22 and Q22-1] as deceptive and Section 2(e)(3) as geographically deceptively misdescriptive [see form paragraph Q32-5 inter alia]. Foreign equivalents of the above listed terms should be treated as if they were in English (e.g. in Italian, FIRENZE = FLORENCE).

6. ORNAMENTATION:

Repetitive designs on leather items or slogans on tote bags are usually considered ornamentation. These marks should be refused as not functioning as a mark under Sections 1, 2, and 45. Vuitton et Fils, S.A. v. J. Young Enterprises, Inc., 210 USPQ 351 (9^th Cir. 1981). [See TMEP sections 1202.03 et seq.; and form paragraphs Q9 and Q9-1 to 3]. Applicant may cure ornamentation several ways: by demonstrating secondary source [e.g. collateral use of the mark] which the Office should construe liberally; by seeking registration under Section 2(f); by amending to the Supplemental Register; by submitting acceptable substitute specimens.

Ornamentation refusals should not be issued for applications filed under Section 1(b). See advisory form paragraph Q9-3.

7. CONFIGURATION OF GOODS:

If the applicant is seeking to register a configuration of the goods, then refusal should be made under Sections 1, 2 and 45 of the Trademark Act. See form paragraph Q 19-22 through Q19-33 and TMEP Section 1202.02(b)(i).

If the applicant is seeking to register an element, which is functional [e.g. a design feature which serves a utilitarian purpose], then the appropriate refusal should be made under Sections 2(e)(5) of the Trademark Act. See form paragraphs Q 19 through Q19-21 and TMEP Section 1202.02(a) et seq.